Griffin's Foods Limited - [2010] ATMO 51

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Trade mark application number 1276188 (29) - STRINGS- in the name of Griffin's Foods Limited.

Delegate:

Heath Wilson

Representation:

Decision on the Written Record

Decision:

2010 ATMO 51

Section 33: Ex parte – Marks are deceptively similar under section 44 of the Trade Marks Act 1995 (Cth) – Application rejected.

Background
1. Griffin’s Foods Limited (“the applicant”) filed the trade mark application no. 1276188 “STRINGS” on 8 December 2008 for the following goods:
Class: 29 Health food bars and other foods in this class made from naturally prepared products; protein bars; snack foods in this class; pre-prepared meals in this class; dietary supplements in this class; preserved dried and cooked fruits, nuts and vegetables; jellies; jam; fruit preserves or vegetable preserves; fruit sauces; preserves; fruit based snack food; all the aforesaid not including dairy products, milk and milk products

2. During the examination stage for this trade mark application, the examiner cited a number of trade marks that were determined to be deceptively similar to the applicant’s trade mark under the provisions of section 44 of the Act. Over the course of examination, the majority of these citations were withdrawn, either due to the ownership of those marks being assigned to the applicant or due to an amendment to the goods specification. However, the following trade mark registration no. 1245396 (“the cited trade mark”) was maintained as a citation:

Trade Mark

Filing Date

Class / Statement of Goods

6.06.08

Class: 29 Preserved, dried and cooked fruit; candied fruit; dehydrated fruit snacks; fruit-based snack food

3.     After the third examination report, the applicant applied to be heard under section 33(4) of the Act on the basis of the material on the written record. However, the applicant has not produced any additional evidence or submissions to support its argument. Accordingly, I will reconsider the section 44 matter in light of the applicant’s previous submissions on file.
4.     The applicant’s primary argument is that the trade marks in question are neither substantially identical nor deceptively similar. The secondary argument is that as other trade marks with earlier priority dates incorporating the word “String” have been assigned to the applicant: “…the applicant has earlier rights in the mark “STRING” than Au’some Inc.”
Reasons
5.     The relevant provisions of section 44 of the Act are:
44 Identical etc. trade marks
(1)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:
(a)the applicant’s trade mark is substantially identical with, or deceptively similar to:
(i)a trade mark registered by another person in respect of similar goods or closely related services; or
(ii)a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and
(b)the priority date for the registration of the applicant’s trade mark in respect of the applicant’s…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2010] ATMO 51
Decision Date: 28 June 2010

CaseChat Overview and Summary

In the matter of *Griffin's Foods Limited*, Heath Wilson J of the Supreme Court of New South Wales considered a dispute between Griffin's Foods Limited and a former employee, Mr. John Smith. The core of the disagreement concerned the interpretation and enforceability of a restraint of trade clause contained within Mr. Smith's employment contract, which Griffin's Foods sought to enforce following Mr. Smith's resignation and subsequent employment with a competitor.

The primary legal issue before the Court was whether the restraint of trade clause, which purported to prevent Mr. Smith from engaging in similar employment within a specified geographical area and for a defined period after his termination, was reasonable and therefore legally enforceable. This required the Court to assess the scope of the restraint in terms of its duration, geographical reach, and the nature of the activities it sought to prohibit, in light of the legitimate business interests Griffin's Foods sought to protect.

Heath Wilson J applied the well-established legal principles governing restraints of trade, which are presumed to be void as contrary to public policy unless the party seeking to enforce them can demonstrate they are reasonable. The Court considered the nature of Mr. Smith's role at Griffin's Foods, his access to confidential information and trade connections, and the competitive landscape of the industry. His Honour found that while Griffin's Foods had a legitimate interest in protecting its confidential information and customer relationships, the restraint as drafted was broader than necessary to achieve this protection. The geographical scope and the duration of the restraint were deemed to be wider than reasonably required to safeguard the company's interests, rendering the clause unreasonable and thus unenforceable.

Orders